IP/C/W/125/Add.26  
15 July 2019  
(19-4687) Page: 1/8 
Council for Trade -Related  Aspects of  
Intellectual Property Rights  Original: English  
 
REVIEW OF THE PROVIS ION OF TRIPS ARTICLE  27.3(B)  
RESPONSES TO THE CHECKLIST OF QUESTIONS1 
UKRAINE  
The present document contains responses to the Checklist of Questions which the Secretariat has 
received from the delegation of Ukraine  on 1 July 2019 . 
 
_______________  
 
 
Introduction  
I. RESPONSES TO THE ILLUSTRATIVE LIST OF QUESTIONS PREPARED BY THE 
SECRETARIAT (DOCUMENT IP/C/W/122)  
A. Patent Protection of Plant and Animal Inventions  
1.  To what extent are inventions concerning plants or animals, whether products or 
processes, patentable under your country's law, if they meet the conditions for 
patentability stipulated in Article 27.1 of the TRIPS Agreement?  
 
According to the Law of Ukraine of 15 December 1993  No. 3687-XII “On Protection of Rights to 
Inventions and Utility Models” (with amendments) legal protection is granted to any inventions, 
whether products or processes, in all fields of technology.  
 
Under Article 6.2 of this Law, the following may be a subject -matter of an invention:  
• a product (de vice, substance, micro -organism strain, plant or animal cells culture etc.);   
• a process (method), as well as a new use of a known product or process.  
 
An invention meets the conditions for patentability, if it is new, involves an inventive step and is 
capable of industrial application (Article 7 of this Law).  
 
2.  Where any such inventions are not patentable, even if they meet these conditions:  
 
(i) To what extent is this due to per se exclusions from patentability?  
   
(ii) To what extent is this based on other grounds (for example because conditions 
for patentability other than those stipulated in Article 27.1 are not met or in 
order to protect ordre public or morality (see Article 27.2 of the Agreement)?  
 
The legal protection shall be granted to an invention that does not contradict ordre public , humanity 
and morality and complies with the requirements of patentability (Article 6.1 of mentioned Law).  
 
 
                                                
1 Documents IP/C/W/122 and IP/C/W/126.  IP/C/W/125/Add.26  
 
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  3.  Please describe any specific provisions, guidelines , final judicial decisions and 
administrative rulings of general application concerning the application of the conditions 
for patentability stipulated in Article 27.1 to subject matter addressed by Article 27.3(b).  
 
According to Article 6.3 of the Law of U kraine “On Protection of Rights to Inventions and Utility 
Models”, the legal protection under this Law shall not extend to such subject -matters of technology 
as plant varieties and animal breeds; processes of the reproduction of plants and animals that are  
biological in its basis and do not belong to non -biological and microbiological processes.  
 
Thus, this Law provides for patent protection for such products as micro -organism strain, plant or 
animal cells culture etc., and for non -biological and microbiolo gical processes for the production of 
plants and animals, if they meet conditions of patentability.  
 
Plant varieties protection is available under the Law of Ukraine of 21 April 1993 № 3116 -XII “On 
Protection of Plant Variety Rights” (with amendments).  
 
As of today, there are no legislative acts on protection of animal breeds in Ukraine.  
 
4.  Where plant varieties are not as such patentable subject matter under your 
country's law, please indicate the extent to which the scope of protection under patents 
for inventions concerning plants can nevertheless embrace plant varieties or a botanical 
taxon whose plants express a trait covered by the claims of a patent.  
 
Article 6.3 of the Law of Ukraine “On Protection of Rights to Inventions and Utility Models” states  
that the legal protection under this Law shall not extend to such subject -matters as plant varieties.  
 
5.  Please provide any definitions used under your country's law with regard to subject 
matter specifically excluded from patentability or specifically patentable (e.g. micro -
organisms, microbiological processes, non -biological processes, plant varieties).  
 
The Law of Ukraine “On Protection of Plant Variety Rights” provides for the definition of “plant 
variety”. It means a particular group  of plants (clone, line, F1 hybrid, population) within the lower 
of the known botanical taxons (genus, type, species) irrespective of whether it satisfies the 
conditions of legal protection (Article 1).  
 
6.  To what extent is subject matter that is identic al to what occurs in nature patentable 
under your country's law?  
 
An invention is patentable if it meets the conditions for patentability stipulated in Article 7 of the 
Law of Ukraine “On Protection of Rights to Inventions and Utility Models”.   
 
7.  Explai n the requirements under your country's law for ensuring adequate disclosure 
of the patentable inventions referred to above.  
 
Under the Law of Ukraine “On Protection of Rights to Inventions and Utility Models”, the description 
of an invention shall be repr esented according to established procedure and shall disclose the 
subject -matter of an invention in a manner sufficiently clear and complete for the invention to be 
carried out by a person skilled in the art. Invention claims shall disclose the subject -matter of an 
invention, be based on the description and be clearly and concisely represented according to 
established procedure (paragraphs 7 and 8 of Article 12).  
 
8. What rights are conferred upon owners of the patents referred to above? Are 
product and pro cess patents subject to the same rules as other patents? Do they benefit 
from the same protection as stipulated in Article 28 of the TRIPS Agreement?  
 
Under Article 28.2 of the Law of Ukraine “On Protection of Rights to Inventions and Utility Models”, 
a patent confers on its owner the exclusive right to use an invention at his discretion if such a use 
does not infringe rights of other owners of patents.  
 IP/C/W/125/Add.26  
 
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  The use of an invention encompasses:  
• manufacturing a product using a patented invention, usage of a product, offering for sale, 
including via the Internet, selling, importing and other means of its introduction into the 
commercial distribution, as well as storing a product for defined purposes;  
• use of the patented process or offering its use on the terri tory of Ukraine, if the person 
making such offer knows that the use of the process without the owner`s consent is 
prohibited or, given the circumstances, it is obvious.  
 
According to Article 28.5 of the above -mentioned Law, the patent gives to its owner th e exclusive 
right to prevent other persons from using the invention without the authorization, excluding the 
cases when according to this Law such use is not considered to be the infringement of rights granted 
by a patent.  
 
The patent owner may transfer, b y the contract, the property right to an invention to any person, 
which becomes his legal successor (Article 28.6 of the Law of Ukraine “On Protection of Rights to 
Inventions and Utility Models”).  
 
Article 28.7 stipulates that the patent owner has the righ t to grant the permission (a license) for the 
use of an invention to any person based on a license contract.  
 
9.  Are there any specific exceptions to these rights (affecting the scope or duration of 
the patents referred to above)? To what extent are excep tions, available in respect of 
plant variety rights (e.g. those referred to under B.4(i) below), available in respect of 
rights conferred upon patent owners?  
 
According to Article 31.2 of the Law of Ukraine “On Protection of Rights to Inventions and Utilit y 
Models” the use of the patented invention shall not be considered to be the infringement of rights, 
deriving from a patent, provided that it is used:  
• without any commercial purpose;   
• for scientific or experimental purposes;   
• in situations of emergency (n atural disaster, accident, epidemic etc.) with the notification of 
the patent owner as soon as possible and with the paying a relevant compensation to him.  
 
The exceptions to the patent owner's right, such as acts done for non -commercial, scientific or 
experimental purposes are similar with the exceptions, available in respect of plant variety rights, 
set out by Article 47 of the Law of Ukraine “On Protection of Plant Variety Rights”.  
 
10.  Are there any specific provisions under your country's law for comp ulsory licensing 
in respect of the patents referred to above?  
 
With the objective of public health protection, state defense, ecological safety and other public 
interests, the Cabinet of Ministers of Ukraine may grant permission to use the patented invention by 
a defined person without the consent of the patent owner (in accordance with conditions, stipulated 
in Article 30.3 of the Law of Ukraine “On Protection of Rights to Inventions and Utility Models”).  
 
In addition, Article 43 of the Law of Ukrai ne “On Protection of Plant Variety Rights” regulates  the 
issuance of the compulsory licensing for the use of the plant variety without the consent of the 
patent holder.  
 
B. Protection of Plant Varieties  
1.  Does your country's law provide for the protection of plant varieties by plant 
breeder's rights, plant patents or any other sui generis system for the protection of plant 
varieties?  
 
The Law of Ukraine  of 21 April 1993 No. 3116 -XII “On Protection of Plant Variety Rights” (with 
amendments) provid es for the protection of intellectual property rights to plant varieties.  
 IP/C/W/125/Add.26  
 
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  2.  (a) If your country is a party to the International Convention for the Protection of 
New Varieties of Plants (UPOV), please indicate which Act or Acts of the UPOV 
Convention you r country has signed; which it has ratified; to which it has 
acceded; and to the standards of which its law conforms but to which it has 
not (yet) adhered.  
  
Ukraine has acceded to the International Convention for the Protection of New Varieties of Plants of 
December 2 1961, as revised by the Additional Act of 1972, the 1978 Act and the 1991 Act (according 
to the laws of Ukraine of 2 June 1995 No. 209/95 -ВР and of 2 August  2006 No. 60-V). 
 
 (b) If your country is not a party to the UPOV Convention, does the  protection 
offered to plant varieties under your country's law conform to the standards 
of any of the Acts of the UPOV Convention and, if so, which?  
 
3.  Please indicate whether concurrent protection under your country's plant variety 
protection law and its patent law is available (see also question A.4 above).  
 
Plant varieties protection is available under the Law of Ukraine of 21 April 1993  No. 3116 -XII “On 
Protection of Plant Variety Rights” (with amendments).  
 
Article 6.3 of the Law of Ukraine “On Pro tection of Rights to Inventions and Utility Models” of 
15 December 1993 (with amendments) stipulates that the legal protection under this Law shall not 
extend to such objects as plant varieties.  
 
4.  Please provide the following details of your country's sui generis  system for the 
protection of plant varieties:  
 
(a) the relevant laws and regulations and, if they have been notified to the Council 
for TRIPS, a reference to the relevant WTO documents;  
 
The legislation of Ukraine on the protection of plant varieties is based on the Constitution of Ukraine 
and consists of the Law of Ukraine “On Protection of Plant Variety Rights” (hereinafter – the Law), 
the Civil Code of Ukraine, international treaties an d agreements on protection of plant variety rights 
consented by the Verkhovna Rada of Ukraine as binding. The Procedure for Maintaining the Register 
of Patents on Plant Varieties is approved by the Resolution of the Cabinet of Ministers of Ukraine of 
19 September 2018 No. 755.   
 
The Law was notified to the TRIPS Council (the WTO document IP/N/1/UKR/P/2).  
In addition, pursuant to Article 63.2 of the TRIPS Agreement Ukraine has notified the laws and 
regulations pertaining to the subject -matter of this Agreeme nt, including plant varieties, in the WTO 
document IP/N/1/UKR/1.  
 
(b) the definition of "plant variety";  
  
According to Article 1 of the Law, the definition of “plant variety” means a particular group of plants 
(clone, line, F1 hybrid, population) within t he lower of the known botanical taxons (genus, type, 
species) irrespective of whether it satisfies the conditions of legal protection.  
 
(c) the conditions required for protection ; 
 
Article 11 of the Law stipulates criteria of variety suitability for the acquisition of intellectual property 
rights to such variety.  
  
Under Article 11.2 of the Law, a variety shall be deemed suitable for the acquisition of  a right to it 
as an intellectual property subject, if, following its characteristics originating from a particular 
genotype or a particular combination of genotypes, it is new, distinct, uniform and stable.  
 
(d) the extent to which subject -matter that is already known to the public or 
identical to what occurs in nature is protectable under your country's sui  
generis system for the protection of plant varieties ; 
 
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  According to Article 11.6 of the Law, a variety complies with condition of distinctiveness, if, following 
its characteristics, it is clearly distinguished from any other variety, generally known pri or to the 
date, on which the application is deemed to be filed.  
 
A variety, which is opposed to the applied one, shall be deemed generally known if:  
а) it is widespread on a particular territory within any country;  
b) information about its characteristics has become known globally, in particular through its 
descriptions in any publicly disclosed publications;  
c) it is presented as a sample in public collection;  
d) it is under legal protection and/or included in offic ial plant variety register of any country, being 
herewith deemed generally known from the date of application for granting the right or entering to 
the register.  
 
Article 191 of the Law states that any person may apply for the acquisition of intellectual p roperty 
right to dissemination of the variety, referred to as generally known, without acquisition of the 
intellectual property rights to such variety confirmed by a patent.  
 
(e) the extent to which protection can be based on characteristics of germplasm, 
as opposed to characteristics of plant varieties derived from such germplasm;  
 
A plant variety can be protected if it is new, distinct, uniform and stable, following its characteristics 
originating from a particular genotype or a particular combination of genotypes (Article 11.2 of the 
Law).  
 
(f) who is entitled to the rights ; 
 
The author(s) of a plant variety or other persons, that have acquired intellectual property rights to 
a plant variety according to the contract or under the Law, are entitled to intellectual property rights 
to a plant variety (Article 31 of the Law).  
 
(g) the procedure for the acquisition of rights, including the authority in cha rge of 
administering the rights ; 
 
Section III of the Law establishes the procedure for the acquisition of intellectual property rights to 
plant varieties. It includes such stages as filing an application to the Competent Authority, 
examination of the application and state registration of rights. The Competent Authority is the 
Ministry of Agrarian Policy and  Food of Ukraine, responsible for developing and implementing the 
national policy on plant variety rights protection. The Ministry  may authorize companies, institutions 
and organizations to exercise some specific powers, related to plant variety rights pro tection, if they 
meet the requirements, stipulated in Article 9.1 of the Law.  
 
(h) the rights conferred ; 
 
According to Article 10 of the Law, the following variety rights may be acquired:  
• personal non -property rights of intellectual property to a plant variety (it shall be confirmed 
by a certificate of plant variety authorship);   
• intellectual property rights to a plant variety (it shall be confirmed by a plant variety patent; 
the scope of legal protection to variety, for which a patent is granted, is det ermined by the 
total characteristics, included in the variety description in the Register of Patents);   
• intellectual property rights to plant variety dissemination (it shall be confirmed by a 
certificate of state registration of a plant variety).   
 
The abo ve rights to variety shall be acquired according to the procedure established by this Law.  
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  (i) exceptions to the rights conferred, such as  
 - acts performed for research or experimental purposes;  
 - acts performed to develop new varieties of plants;  
 - acts performed to commercialize such newly developed varieties;  
 - any "farmer's privilege " (e.g. acts performed by a farmer on his own land 
in respect of seed saved from the previous harvest);  
 - acts done privately and for non -commercial purposes;  
 - compulsory licensing.  
 
According to Article 47 of the Law, intellectual property rights to plant variety shall not extend to:  
• acts done privately and for non -commercial purposes;   
• acts performed for experimental purposes;   
• acts performed to develop new variet ies of plants.  
 
Article 43 of the Law establishes the possibility of granting compulsory licensing for the use of the 
variety without the consent of the patent holder. Such compulsory license may be only 
non-exclusive, with specification of variety use scope, term of permission validity, amount and 
procedure for remuneration to the patent holder. It may be granted by the Cabinet of Ministers of 
Ukraine and by the court.  
 
(j) the duration of protection ; 
 
The duration of protection shall be 35 years, count ed from the 1st January of the year following the 
year of state registration of intellectual property rights to a plant variety for trees and shrubs and 
grape; 30 years – for other varieties (Article 41.2 of the Law).  
 
(k) transfer of rights ; 
 
According to  Article 40 of the Law, a patent holder may transfer its property rights to a variety to 
any natural or legal person, which becomes its legal successor, under the licensing contract. In 
addition, transfer of rights may be performed through inheritance.   
 
(l) enforcement of the rights  
 
Any actions in respect of the protected variety, performed without the authorization of the owner of 
intellectual property rights to such plant variety, shall be deemed to constitute an infringement of 
intellectual property ri ghts to a plant variety (Article 53.2 of the Law). Ukrainian laws establish the 
responsibility for infringement of plant variety rights.  
 
According to Article 53.4 of the Law, the person whose variety rights have been violated may claim 
the following:  
• ceasing the actions that violate or predetermine the infringement of its rights as compared 
to the situation that existed before such infringement;  
• indemnification for the caused damage, including the lost profit;  
• compensation for non -pecuniary damage;  
• taking other measures on variety rights protection provided for by laws of Ukraine.  
 
The person, entitled to use the variety under the license contract, may also claim the restoration of 
the violated patent holder`s rights, unless otherwise is provided for by the  contract.  
Under Article 53.5 of the Law, at the request of the right holder, the infringer shall cease the 
infringement of the rights and indemnify for the caused damage.  
 
Article 54 of the Law provides for provisions concerning settlement of disputes on variety rights in 
the course of court proceedings. It stipulates that person, whose variety rights have been violated, 
may apply to the court for remedy.  
 
The responsibility related to the infringement of variety rights is set out in Article 55 of the Law.  The 
court is entitled to render a judgment on the following:  
• compensation for non -pecuniary (non -property) damage, caused by the infringement of the 
variety rights, with specification of the amount of compensation;  
• compensation for the damage, caused by t he infringement of intellectual property rights to 
a plant variety;   IP/C/W/125/Add.26  
 
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  • recovery of profit, received in the result of variety rights infringement, including the lost 
patent holder`s profit;  
• recovering the compensation, defined by the court in amount from 10 to 50,000 minimum 
salaries, with due consideration of whether the infringement was intended or not, instead of 
compensation for the damage or recovery of profit;  
• ceasing the act that predetermines the infringement of variety rights.  
 
The court may render a  judgment to impose a fine on the infringer amounted to 10% of the charge, 
judged in favour  of the claiming party (Article 55.2 of the Law). Furthermore, the court may render 
a judgment on the following:  
• withholding from commercial distribution or seizing any variety materials and product, 
obtained with using such variety, which have been illegally received by the infringer (the 
variety materials and product, acquired by other persons in good faith, shall not be subject 
of seizure);   
• withholding or seizing the materials and/or equipment, which have been extensively used 
for the illegal production of variety materials (Article 55.3 of the Law).  
 
II. RESPONSES TO REPRESENTATIVE QUESTIONS FOR TRIPS 27.3(B) REVIEW 
SUBMITTED BY THE DELEGATIONS OF CANADA, THE EURO PEAN UNION (FORMERLY 
EUROPEAN COMMUNITIES), JAPAN AND THE UNITED STATES (DOCUMENT 
IP/C/W/126 ) 
A. Patent System Questions  
1.  In your territory, is there any basis for denying a patent on an invention consisting 
of an entire plant or animal that is novel  and involves an inventive step ? 
 
2.  If the answer to question 1 is 'yes', please res pond to the following questions : 
 
(a) Does your patent system exclude entire plants or animals as inventions? If it 
does, please cite the legal basis for this.  
  
(b) If your patent system does recognize entire plants and animals as inventions, 
does it exclude all such inventions from being patentable subject -matter, or 
does it only exclude certain types of plants or animals? If it excludes all, please 
cite the legal basis for their exclusion (e.g. lack of industrial applicability). If 
it excludes only certain types, please identify the categories or characteristics 
of inventions that are excluded and cite the l egal basis for their exclusion.   
 
(c) Is there any other basis in your law that precludes the grant of a patent on any 
categories of plant or animal inventions that otherwise are novel, involve an 
inventive step and are capable of industrial application? If so, please cite the 
legal basis for that ex clusion from paten t eligibility . 
 
3.  Other than with respect to subject -matter you defined as being ineligible to be 
patented under question (2), is it possible in your territory to obtain a patent claim defined 
in any of the following ways?  
 
(a) A patent claim that is not  limited to a specific plant or animal variety.  
 
(b) A patent claim that is expressly limited to a plant or animal variety.  
 
(c) A patent claim that is expressly limited to a group of plants or animals, where 
the group is defined through reference to a sha red characteristic such as 
incorporation of a particular gene.  
 
(d) If the answers you provide to question (3)(a) to (c) vary, please provide the 
definitions of a "plant variety" and an "animal variety" that are used by your 
examining authority.  
 
  
 IP/C/W/125/Add.26  
 
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  4.  Is it possible to obtain a patent in your territory on a microorganism that is novel, 
involves an inventive step and is capable of industrial application? If not, please identify 
the legal basis under which these inventions are deemed ineligible to be patent ed. 
 
5.  Is it possible to obtain a patent in your territory on an essentially biological process 
for the production of a plant or animal (i.e. a process limited to those acts that are 
necessary for sexual or asexual reproduction of a plant or animal)? If not, please identify 
the legal basis under which a patent on such a process would be denied.  
 
6.  Is it possible to obtain a patent in your territory covering subject -matter that is 
identical to that found in nature (e.g. a plant or  animal in its natural s tate)?  
 
B. Plant Variety Protection Systems  
7.  Do the laws applicable to your territory provide for a sui generis form of protection 
for a new plant variety?  
 
8.  If the answer to question 7 is "yes", does that protection conform to the standards 
defined in one of the Acts of the International Convention for the Protection of New 
Varieties of Plants (UPOV)?  
 
9.  If the answer to question 8 is "yes", please specify the Act of the UPOV Convention 
upon which your legislation is based (i.e. the 1991 Act, the 1 978 Act or the 1961/1972 
Act).  
 
10.  If sui generis protection for plant varieties is provided in your territory, would any 
of the following acts require the prior authorization of the right holder:  
 
(a) acts performed for research or experimental purposes , or to develop new 
varieties of  plants;  
 
(b) acts performed to commercially exploit a variety distinct from the protected 
variety  but sharing its essential characteristics;  
 
(c) acts performed by a farmer of harvesting seed from his planting of a protected 
variety  legitimately obtained, storage of that seed, and replanting of that seed 
on the farmer’s  land. 
 
If prior authorization is not required for any of the above examples of activities, is there 
any requirement that the party undertaking the sp ecified actions provide the right holder 
with remuneration in any form?  
 
11.  Can protection be obtained for a plant variety that was known to the public, or was 
publicly  available, prior to the application for sui generis protection for that plant variety , 
and, if so, under  what conditions (i.e. what are the time -limits during which public 
disclosure or availability will not  preclude the grant of protection).  
 
12.  Can protection be predicated on identification of an unexpressed gene, on an 
unexpressed set  of genes present in the genome of the plant variety, or on the 
characteristics of germplasm, rather than  the expressed characteristics of plant varieties 
derived from such genes or germplasm?  
 
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